Citing References to the USPTO

PatentlyO069The chart above shows the average number of prior art references cited per patent, grouped by issue year. The chart is "stacked" with references cited by the examiner at the bottom and references cited by the applicant on-top.

162 thoughts on “Citing References to the USPTO

  1. operation of 1.56(b), there should be nothing to submit in an IDS prior to an office action, no?

    disclosing a reference in an IDS is an admission under 1.56 that one or more claims is unpatentable, no?

    Another one confusing “material” – the phrase “inconsistent with an applicant’s position on patentability” does not mean that the material will deny the patent, but rather, only that the material needs to be looked at because it may be a factor.

    The specific rules under an IDS have also been posted – try reading the (g) and (h) portions of the rule.

    Reply
  2. I don’t believe that anyone has pointed out the conflict that inheres in 37 CFR 1.56.

    Specifically, 1.56(a) levies a duty to disclose information material to patentability. But 1.56(b) defines materiality as information that (1) establishes a prima facie case of unpatentability, or (2) refutes or is inconsistent with an applicant’s position on patentability.

    So, if an attorney has submitted claims that it believes are patentable over the prior art, then by operation of 1.56(b), there should be nothing to submit in an IDS prior to an office action, no? (Put in reverse, disclosing a reference in an IDS is an admission under 1.56 that one or more claims is unpatentable, no? If not, then the reference is by definition not material.)

    Reply
  3. 6 said:

    “Now, if you want to chat further you’re going to have to answer my question that I’ve been asking you a few times now. How do you know if a reference is material if you haven’t read it? ”

    I don’t want to chat further, but I’ll answer your question:

    The test is whether an examiner might cite the reference in a 103 rejections. By that test, any reference is material. Examiners cite any document they can find that uses similar words to those used in my application.

    So, If an inventor mentions a document it passes the test and gets cited.

    If another examiner, for example on prosecuting the European or Japanese version of the application cites a document, it passes the test and gets cited.

    If another examiner prosecuting a related application cites a document, it passes the test and gets cited.

    I can easily deem all those documents as material under the –would an examiner cite this in a 103 rejection– test without ever looking at any of them.

    You wanna raise the bar? Stop issuing nonsense 103 rejections.

    Reply
  4. Good thing for us he doesn’t have to do any of that thinky-work.

    Fixed

    Reply
  5. Apparently that is too complicated for you to comprehend.

    I hear 35 USC 103 is similarly complicated.

    Sounds like 6 has a pretty tough job. Good thing for NWPA he doesn’t have to do any of that thinky-work.

    Reply
  6. So, the summary of the thread:

    6, MM, and sods, have come up with no citation that there is any obligation on the applicant to weed an IDS. All of the citations indicate the obligation is on the examiner.

    6, MM, and sods have disparaged my practice and my character based either on no knowledge or absurd conclusions based on me not doing their weeding of the IDSs.

    6 has illustrated that he does not understand the relationship between the MPEP and 35 U.S.C.

    I’d say once again, 6, MM, and sods have illustrated that they know very little to nothing about patent law and their opinion is about as useful as their prediction of Bilski was.

    Reply
  7. 6, your posts are full of cheap shots and ridiculous logic.

    Nothing requires that a reference cited in an IDS be material, the requirement is that a material reference be in an IDS. That is the way the system is set up. Apparently that is too complicated for you to comprehend.

    Reply
  8. That’s a good idea actually. Might just save me some time, thanks DIP.

    “Second, No pity from me on this one! I have to manually type them in every time using EAST in the PSF!”

    That’s kind of the point though, these kinds of things should and could easily be, automated. Just because your place of business doesn’t bother doesn’t mean that mine shouldn’t. We have 6000 people using this thing.

    Reply
  9. 6,

    Two things for you. First, cut and paste the raw data into a word processor or notepad program and do a find and replace on all the , and / characters. Replace ‘em with nothing. Ctrl-H command if it isn’t in the pull down menu.

    (Or just leave the commas in and pop ‘em into the BRS window and put a left and right paranthesis around all of ‘em and then use the .pn. command. – I’m pretty sure this works…)

    Second, No pity from me on this one! I have to manually type them in every time using EAST in the PSF!

    DIP

    Reply
  10. Not to mention that deleting the “,” ‘s often leads to a mistaken hitting of the delete key and erasing one of the numbers, thus making you go back to replace that number from the IDS.

    On the whole, if the IDS isn’t over 50 references or so and you’re decent with a keypad, you may as well just type them in manually.

    Reply
  11. “After a non-patent reference is scanned in, it can be OCR’d quite accurately in most cases.”

    OCRing has one big ol’ problem, as well as the secondary problem of the OCR being done to include all the fin “,” ‘s that people just have to put in. You know that EAST doesn’t like that sht if you use ISR, so you have to delete them all by hand (may as well have just typed the whole number out if you’re good with a keypad). And EAST doesn’t like the commas in normal search mode because it will bring up all the references that include that patent number (i.e. all the patents that cite to each of the references you want to look at). But the worst thing which I mentioned above is that despite the fact that it is “quite accurate” it isn’t fool proof so you still end up having to check off each reference individually if you really do a good job. If you don’t do a good job you may as well just say you looked at them and have barely perused their titles/Fig on the front.

    If people would stop fin putting “,” ‘s and “/” ‘s in USpubs then it would make OCRing much easier. They should change the formating requirements for IDS’s. Or, as a buddy of mine keeps reminding me, simply make IDS’s be digitally submitted.

    Reply
  12. “The difference between your client and me is that your client is an expert in a field and I am not.”

    The real problem underlying NWPA’s practice.

    I perused your posts for an answer to my question NWPA, but since there doesn’t seem to be one, I suppose it is just too hard to answer. Ping, I note, did not answer my question and your reference to him doesn’t answer the question any more than complete silence.

    “The applicant should not have to write a thesis on the subject to get a patent.”

    Citing appropriate references is hardly writing a thesis.

    Reply
  13. “The difference between your client and me is that your client is an expert in a field and I am not.”

    The real problem underlying NWPA’s practice.

    I perused your posts for an answer to my question NWPA, but since there doesn’t seem to be one, I suppose it is just too hard to answer. Ping, I note, did not answer my question and your reference to him doesn’t answer the question any more than complete silence.

    “The applicant should not have to write a thesis on the subject to get a patent.”

    Citing appropriate references is hardly writing a thesis.

    Reply
  14. Watch out for my AHEM CHq CHq clear my throat commentary. I can go clear across a room… BULLS EYE

    Reply
  15. Sarah, I have no idea what you are talking about. It sounds like you are disturbed, but without facts it is hard to make any sense of what you are saying.

    Reply
  16. I should say that if the inventor said here is 3 references those are the only ones that are material, I’d say fine, and submit the 3 references. I’d probably document the process we went through.

    Reply
  17. After taking every liberty I can imagine from me, including Water for a year, so my poor Husband 60 plus could tote it so we could live. Why was the liberty of voting not taken from me? From the very Forum that decided my fate, without my knowledge or consent?
    For fear of losing that right too vote, I’ll pass on further comment. Because obviously the free speech I am entitled to has also been denied.
    A valid question(s) that begs an answer.
    How can a Case be heard in a Court without all the facts?
    And how can a decision be made to chain a person for 15 years, for no other reason but to hide the Crimes commited against her?
    Do any of you have any Idea how many Jobs I lost because of the third set? Ask them!

    Reply
  18. >> If, as you say, the PTO Examiners know the art
    I said they should know their art unit. And, the PTO would be a better place if the art units had people like your friend as researchers to help the examiners.

    Interesting case MaxDrei. Here is what I would do.
    I would write the claims and get a good idea what the application was going to look like.

    I would explain to the client the duty of disclosure and materiality with respect to the claims, and then ask the client to providde me a list of the references the client believes is material. I would give the client guidance on the meaning of cumulative. If the client came back and said, well what about if I chose the most relevant 50 references. I would say, that may be a good start. Chose the 50 and then look outside that group to see if you think any of the others are not cumulative. Include them if they aren’t cumulative or chose a paper that surveys the field to make them cumulative. And, chose later papers that include the art of the earlier papers.

    I would likely refine this advice so that the client could give me his/her list. I would likely not read them and file an IDS. I may look through them to make sure that I think the claims are good.

    In effect, I would ask my client to create a search report for the patent application. I’d probably in this case let the IDS go north of 100 if the client didn’t want to spend time on it.

    The difference between your client and me is that your client is an expert in a field and I am not. That is the key to understanding these IDS wars. An expert can prune fairly and quickly. An attorney cannot. The PTO needs to be the expert to examine applications. They cannot and should not rely on the applicants.

    The applicants duty is really related to not what is known in the field as Kappo would have forced, but a safeguard against special knowledge that may be hard for the examiner to find or know. The applicant should not have to write a thesis on the subject to get a patent.

    Reply
  19. NWPA writes:

    “The fact is that there is always a way to game the system except for submitting every reference that comes to your attention. If the examiners knew their art units as well as they should, this would not be a problem”

    I have a client that watches A publications in its field of interest. This it has been doing for as long as I can remember (in excess of 15 years, ie, 180 months). Every month it has a pile of about 50 abstracts to look through (it is a field in which many competitors file assiduously).

    Night, your advice please. With the new app it will file next week, should it hand the PTO Examiner a list of 9000 references (even though we think we know the art quite well)? If, as you say, the PTO Examiners know the art, what is the point, except to protect against accusations of IC?

    Or perhaps it should better terminate its watching search? Only thing it, it is the watching search that allows me to draft the new apps knowing already what is the closest art, acknowledging it, and setting the invention in the context of the closest art.

    What do you think?

    Reply
  20. Interesting. The incivility you show toward others is unbecoming. Patents are suppose to set out the metes and bounds of the invention in such a manner that a person of ordinary skill in the art can make and use the invention.

    Reply
  21. ping said something is affecting both sides.

    Publication of 100% of all US applications coupled with skyrocketing numbers of applications is my guess.

    Reply
  22. The fact is that in MM’s little hypo an attorney got a search perfomred and didn’t like the search results, and then performed another search and didn’t disclose a material reference in the first search result. Doesn’t sound good to me.

    Consider that attorneys could get large search results to mask not disclosing material references.

    The fact is that there is always a way to game the system except for submitting every reference that comes to your attention. If the examiners knew their art units as well as they should, this would not be a problem.

    Reply
  23. >>Fricken $tupid post there Mooney!

    There I fixed it for you Ned.

    Sheesh, MM, just weed and keep your lips pressed together.

    Reply
  24. Wait, you’re saying that changing the merits of the charge won’t preclude people deliberately bringing meritless charges?

    I don’t think he’s saying that the result would not obtian, but that there is a proper way to preclude meritless IC charges, and that changing the law on IC is not the proper way. No doubt, Malcolm thinks that the “proper way” is the one that is most punitive to patent applicants. Perhaps jail time?

    Reply
  25. Let’s see a hypo that is more realistic.

    1. Get a disclosure from big corp.
    2. Write some initial claims.
    3. Perform a search.
    4. Get back 40 references.
    5. Amend and finalize the claims while taking a close look at 7 of the 40 references and skimming 33 of references. You have zoomed in on two or three things the prior art doesn’t show and feel good.
    6. Write application.
    7. File IDS with all 40 references for the following reasons:
    (a) you have no proactive duty to weed. Your client should not have to pay you to weed.
    (b) The person you paid to do a search thought they were material so you include them, because you aren’t sure if there may be something in one of them that SOMEONE with a litigation budget may be able to make an arugment that the references is material to patentability.
    (c) fairness to the examiner as they were in the search so maybe he/she can find something in them that you didn’t see.

    In fact, there is no reason not to include them and every reason to include them. The only reason I’ve read from this blog is that somehow they know that I would do a better job on the application if I weeded for them.

    You see, the way to think about this is that I am submitting those references that I became aware of in the course of preparing an application. Quite reaonable to submit them all. It would be a different story if I intentionally inflated the number of references by say performing a search myself and adding a few 100 references just to make it harder for the examiner. That would be wrong.

    Reply
  26. Malcolm: Lionel, do you think that the proper way to preclude meritless IC charges such as this one is to change the law regarding what constitutes IC? If so, you’re wrong.

    Wait, you’re saying that changing the merits of the charge won’t preclude people deliberately bringing meritless charges?

    Seems a little far-fetched.

    Reply
  27. Lionel Everyone you download and don’t submit could be used to support an IC claim in court.

    Likewise if you hire a search firm and they return to you X number of references per your instructions, any you do not submit could be used in an IC claim in court.

    If you don’t read every reference in your possession entirely, you are risking the possibility of missing material information if you do not submit it.

    Let me make this more clear for you Lionel. Let’s say I do a search and it’s too broad. It yields 1200 references. I don’t even look at it because it’s too many docs to wade through. But the results are there. I do a narrower search which yields 600 references. Based on the titles and/or abstracts and/or “relevance” determined by the computer, I pick 30 to look more closely. Ultimately, I submit 20.

    During discovery, the plaintiffs attorneys do a crappy job and all the searches are revealed to the defense. Some unfortunate 1st year is given the task of reading all 1200 references in the first search and lo and behold finds a reference obtained only by that search which is non-cumulative and material relative to the 20 references I disclosed. Based on all of the facts above (obtained via a deposition of yours truly and answers to interrogatories), the defense mounts an IC charge which is dismissed on summary judgment.

    Lionel, do you think that I was wrong not to disclose the 1200 references because it would have prevented the IC charge? If so, you’re mistaken. Lionel, do you think that the proper way to preclude meritless IC charges such as this one is to change the law regarding what constitutes IC? If so, you’re wrong.

    Perhaps you need to get involved in some litigation again to remember how the game works.

    Reply
  28. Does the PTO have a tool to search references cited in an IDS?

    In theory, yes. After a non-patent reference is scanned in, it can be OCR’d quite accurately in most cases. Many widely used document-storage databases can search stored OCR’d documents just as they search typical text (e.g., MS Word) documents.

    Reply
  29. “Capability to perform a limited keyword search on submitted references (and perhaps other references already identified as pertinent) would be helpful.”

    Further, I’d liek to see a tool that llows keyword searching of references citing to and cited by a particular reference or set of references. This tool would also help applicants performing prefiling patent searches and other searches. Google patents helpfully serves up list and links to each patent cited in and cited by a particular patent, and the ability to keyword serch them individually, but I’d like to be able to search them as a group so I can avoid clicking on and searching the ones that aren’t relevant. Ability to keyword search file histories would also be nice.

    Reply
  30. Who’d a thunk I’m a character assasinator. Never in my whole life did i ever dream this would happen

    Reply
  31. I wonder if an implication that anybody is an examiner, coming from anybody, counts as “character assassination”.

    Fixed.

    Reply
  32. IANAE: look back at your posts and the way you characterize my behavior and my practices. Sheesh. As if you are the injuried party.

    Reply
  33. NWPA:

    (1) I wonder if an implication that I am an examiner, coming from you, counts as “character assassination”.

    (2) Thank you for your expert legal opinion. I’m surprised you bothered to give it, considering that I don’t expect to be billed. That’s time you could have spent weeding.

    (3) Same to you.

    Reply
  34. Ned Said: Does the PTO have a tool to search references cited in an IDS?

    DDC replies: Ned, I have offered this suggestion to folks before, and I think that it is a good one. It is usually a waste of time to fully read-through every reference submitted by the applicants. However, it is also probably folly to entirely ignore those references. Capability to perform a limited keyword search on submitted references (and perhaps other references already identified as pertinent) would be helpful.

    Reply
  35. IANAE:
    (1) We don’t have to do the weeding. You do. You have no cite that says otherwise. The MPEP instructs you to do the weeding.

    (2) You don’t know what you are talking about regarding drafting patent applications.

    (3) Shhhh. Weed and be happy you have a job on the backs of our clients.

    Reply
  36. Does the PTO have a tool to search references cited in an IDS?

    Reply
  37. But everyhting we do as attorneys is a balancing of risks.

    Attorneys don’t balance risks, they avoid risks. Specifically, the risk their client will not pay for these hours spent reviewing the IDS art so the examiner can do a better examination and get the client a better patent, and the associated risk that the attorney will see his time written off and fall short of his billable target or bonus threshold, or that the attorney may be held responsible for the client taking his business elsewhere because no other firm has ever billed him for that particular service.

    Incremental differences in patent quality generally present negligible risk for the attorney. Even though that’s what the client usually thinks he’s paying “very well” for.

    Fear is what drives IDS practice. Fear of losing clients and fear of exposing oneself to this “plague” of inequitable conduct litigation. Fear is a risk-avoidance mechanism. Balancing risks takes rational thought.

    Reply
  38. IANAE: there are so many cheap shots in there that I am not going to respond.

    Reply
  39. Only many years later, in the highly unlikely event that one of their patents gets litigated, in the even more highly unlikely event that one of them that was otherwise valid and infringed is held unenforceable, and in the also unlikely event that the rest of your profession isn’t wrong in its legal judgment in exactly the same way.

    That’s a lot of “ifs.” But everyhting we do as attorneys is a balancing of risks. There’s a reason why practically all of my colleagues agree that the calculus weighs rather heavily on the side of “better safe than sorry,” amd cross site everything between related cases, including USPTO Office actions. I’ve seen more than one IDS filed by others with 1000+ references.

    Reply
  40. Lionel: No patent examiner (who is not taking ab huge loss on his hours) reads everything submitted in its entirety. Does not and will not happen.

    I think your statement is equally true after my little amendment.

    NWPA: I said it before that there is difference between knowing what isn’t there and knowing what is there.

    You also said before that it was too hard for you to know how someone else might combine references under 103. Aren’t you really saying that an examiner or litigator might find a way to argue that your claims are invalid based on what you “knew” wasn’t there?

    NWPA: I am paid for my legal judgment. My judgement is that me weeding the references is unnecessary work.

    In your excellent legal judgment, exercising your excellent legal judgment to get your clients a better examination of the patents you used all your excellent legal judgment to draft is a waste of your excellent legal judgment?

    NWPA: I could be sued by my clients if that legal judgment is wrong.

    Only many years later, in the highly unlikely event that one of their patents gets litigated, in the even more highly unlikely event that one of them that was otherwise valid and infringed is held unenforceable, and in the also unlikely event that the rest of your profession isn’t wrong in its legal judgment in exactly the same way.

    In the meantime, your clients will happily keep paying their bills as long as they don’t see line items like “reading 600 prior art references instead of telling my secretary to make a list of them for free, 29.7 hours”.

    Your “legal opinion” is nothing more than “my clients probably won’t pay for this, and I probably won’t get sued for not doing it”, which is actually more of a business judgment. A sound one, but still.

    Reply
  41. >>6, I am an attorney. I am paid for my legal >>judgment. My judgement is that me weeding the >>references is unnecessary work. That is my >>legal opinion

    And, 6, you should think about this for at least a week before responding. Think about what it means to be an attorney. That is my legal judgment. I could be sued by my clients if that legal judgment is wrong.

    Now go weed and shhh.

    Reply
  42. >>And the illegality of making applicants do a >>search was settled in Tafas.

    >>That be reality

    What do you have to say to that 6? And, if you want me to keep chatting with you, then you answer why you think that I can only put a reference down on an IDS if I KNOW that it is material.

    Reply
  43. So, again, you sods, the PTO has never said it is our job to weed. It is your job to weed. Get over it. And don’t try to tell me how to do my job. I have excellent reviews from in-house counsel from many of the top tech. firms in this country. I know how to write a patent application and am paid very well for it.

    6, I am an attorney. I am paid for my legal judgment. My judgement is that me weeding the references is unnecessary work. That is my legal opinion. Nothing you or anyone else has written on here changes that. That is reality.

    What “did” wrote about 37 C.F.R. § 11.18(b) would change my opinion if what he said was accurate, but it is not. That statement was regarding whether we read papers that we signed. It was in response to partners saying that they had not read the paper and merely signed it.

    6, if your job is not defined by 35 U.S.C. then why was the rule package not implemeeted? You have no clue and seem to dislike the fact that the law defines your job.

    Any more nonsense you guys want to throw on the wall for me to wash off?

    Reply
  44. An observation for thought: Both the applicant and the office have retreated in the number of references cited. Most of the comments so far have dealt with only one side of this retreat. But obviously something is affecting both sides.

    Perhaps with Kappos in charge, the patent world is edging away from the high levels of CYA and getting down to business of actually examining applications for patentability rather than the game of “no”.

    Reply
  45. Ned said: >>he doesn’t have a clue as to what is in the >>references except that someone thinks they may >>be relevant for some reason.

    Ned I have a clue. I said it before that there is difference between knowing what isn’t there and knowing what is there. I.e. I figure out what the inventor did and then figure out a way to claim it and then look through the reference to see if there is a similar structure. It works well.

    6 said: “How do you know if a reference is material”
    Read what ping wrote 6. What I know is that it might be material, since it was cited in a search report. Someone thought it was material and since I hired the searcher it is reasonable for me to include it in the IDS.

    Sorry the job of weeding is yours.

    >>Did said: TO Discipline Director Harry Moatz >>repeated

    Sorry, did, but that statement is meant for papers that are signed by us. Not references. I have never seen an opinion anywhere that said I had to read a reference filed in an IDS. If I did, then it would be necessary work and I would start doing it.

    Reply
  46. Section 11.18(b)(2) is added to provide that a party submitting a paper certifies to the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, that the paper is not being presented for any improper purpose, that other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the establishment of new law, that allegations and factual contentions have evidentiary support, and that denials of factual contentions are warranted on the evidence or are reasonably based on a lack of information or belief.

    Sorry Chief – nowhere does it actually say what you think it days.

    Reply
  47. And the illegality of making applicants do a search was settled in Tafas.

    That be reality.

    Reply
  48. Reality determines that
    How do you know if a reference is material

    Big fishbowl of red herrings.

    What does 1.97(g) and 1.97(h) actually say?

    (g) An information disclosure statement filed in accordance with this section shall not be construed as a representation that a search has been made.

    (h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

    That be reality.

    Reply
  49. Harry Moatz has no idea of the magnitude of his statement. No patent attorney (who is not taking ab huge loss on his hours) reads everything submitted in its entirety. Does not and will not happen.

    Reply
  50. at the end of the first paragraph in my last post add “responsible for those.”

    Reply
  51. Malcolm,

    If all you do is receive a list of titles in an online search, you are responsible for none of those until you look at them. However, if you are in physical possession of 600 references you better take the time to carefully review each one because you will be

    Everyone you download and don’t submit could be used to support an IC claim in court.

    Likewise if you hire a search firm and they return to you X number of references per your instructions, any you do not submit could be used in an IC claim in court.

    If you don’t read every reference in your possession entirely, you are risking the possibility of missing material information if you do not submit it. And defense counsel will certainly spend the time to pore over the references to find any material ones you may have missed.

    Reply
  52. Did you really say that, so we have 20 or so related cases accumulating references. Someone files an IDS in a related case with 300+ references. I now have to file that IDS in my related case.

    What the F am I to do?

    I did, in fact, read the references. But it took me days. Do most attorneys have that luxury?

    Night is a typical patent attorney. He cannot bill his client for the reading the references, but he does have to disclose them all because he doesn’t have a clue as to what is in the references except that someone thinks they may be relevant for some reason.

    Now tell me, as I think I saw this somewhere, does the patent office have some automated tool to search references cited in an IDS? In a sense, this is reading them by quickly focusing in on the critical passages. I don’t have such a tool, but it would be a good investment.

    Reply
  53. TINLA, thanks for the link. It opens:

    “TO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). ”

    Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large. As illustrated by Night Writer, modern searches are producing large numbers of references. The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.

    The world of IC and ethics is in conflict. One cannot comply with the irreconcilable orders of two masters, particularly where one is a vague and indefinite master and the other is one who pays the bills.

    Posted by: Ned Heller | Jul 14, 2010 at 01:33 PM

    There you go chief. Ned saying it’s impossible for patent attorneys to practice as required by CFR. IMO, too many practitioners refusing to comply with CFR is a huge contributor to the backlog @ PTO. Congress and PTO have plenty of blame as well, but a good sized piece of the pie is practitioners who take the attitude that (for whatever reason) they can’t be bothered with following the rules.

    Reply
  54. “Should I be doing work that I believe is not necessary (and in fact may be harmful) and billing them for it? ”

    I’m pondering. Yes. Because it isn’t up to you what is necessary. Reality determines that sir, not you.

    “Can you explain the relationship 6 and then tell us again that your job is not defined by the law.”

    Sure, the relationship is that of a guidance document, the MPEP, and a collection of laws, or “the law”. That is the relationship of two separate and distinct entities.

    Again, my “job” is defined by my PAP, and perhaps by my boss, nothing else. If you’d like to see my PAP, I can show it to you sometime I suppose, but it is no different than anyone else’s, I’m sure you’ve seen one before.

    All clear?

    “Funny my character feels very much alive.”

    And you guys wonder how I get attorneys to admit things I want them to admit.

    Now, if you want to chat further you’re going to have to answer my question that I’ve been asking you a few times now. How do you know if a reference is material if you haven’t read it?

    Reply
  55. NWPA and his detractors, there is no reason for ad hominem attacks on character.

    I’m sure NWPA is a typical patent attorney conscious of clients and their bills.

    6 and MM are government workers that feel underpaid and overqualified and thus are comfortable to work in accordance with their pay.

    Now the IDS issue would go away if you get rid of IC absent a clear showing of ACTUAL INTENT, which is what is required in a finding of IC. Courts that opined on the possibility of “implying” intent without actually ruling on it have muddled the water for filing IDS.

    Completely agree with NWPA regarding 103, it is impossible to find some types of combination without having a litigation budget allocated to filing a patent. Unless your client invents something truly revolutionary, like eternal life, there is no economic incentive to spend that type of money per application.

    One thing to help IDS submissions for the reviewers, would be to indicate how a relevant piece of art came to the filer’s attention (e.g. self search or 3rd party information). This would at least serve to que examiners into what art may be important to read.

    Reply
  56. follow the rules in the CFR

    cite please.

    Reply
  57. Ned Heller said

    Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large. As illustrated by Night Writer, modern searches are producing large numbers of references. The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.

    So it’s “impossible” for you as a patent attorney to follow the rules in the CFR. Wow.

    I’m sure that too is the examiner’s fault, in your opinion.

    Reply
  58. there was no character assassination

    Should he amend the charge to attempted character assassination?

    Reply
  59. Funny my character feels very much alive.

    I guess that proves there was no character assassination after all.

    Congratulations on your full recovery. You really are quite a character.

    Reply
  60. I blame the examiner corps themselves

    LOL – right after blaming yourself, blame the worthless POPA who should know better.

    Reply
  61. Funny my character feels very much alive. I need a shower after interacting with you, MM, and Max, but other than that I am as fit as a fiddle.

    Reply
  62. You certainly are worked up about this.

    Ponder this: I am an attorney representing clients. Should I be doing work that I believe is not necessary (and in fact may be harmful) and billing them for it?

    Ponder this: I used in “accordance” with. The relationship between the MPEP and 35 U.S.C. is actually much stronger. Can you explain the relationship 6 and then tell us again that your job is not defined by the law.

    Reply
  63. “6, you must follow the MPEP by executive order. ”

    So quote me some MPEP ya sorry arse.

    “The MPEP must be in accordance with the law. So, your job is defined by the law. ”

    Being in accordance with is not really the same as being defined by. But nice try at making a logical fallacy there.

    Your character is dead NWPA. Have fun with that.

    “On a practical level, 6, if you would dodge work you don’t have to do, then why do you think we should do work we don’t have to do?”

    If you’ll be so kind as to answer the question I’ve put to you twice now you’ll notice that I’ve not been asking about any work you “don’t have to do”.

    Besides my note about my dodging work was a simple “if I dodged work … then I wouldn’t feel bad about it” kind of a sentiment, I personally do not.

    ” And in reality, by and large, we won’t be paid for it either.”

    Your failure to bill your client for work you do isn’t my business, that’s yours. I would. If they don’t like my prices then there would always be Eugene Quinn and the rest of your ilk to fall back on. Eventually I’d say I could separate the wheat applicants from the chaff.

    “The one useful item out of your rant is that I think your pay per application should depend on how those IDSs. Not sure how to structure it, but it would be fair.”

    If we were going to break it down like that we may as well break it down by search time, review time, etc. on forever.

    Regarding pay, the thing is, I blame the examiner corps themselves for not having gone on strike with the implementation of any “production” system way back when. I suppose they probably would have if it hadn’t been implemented in increments.

    The legacy systems that our country is burdened with sicken me.

    Reply
  64. Quite telling that you wish to impugn my ability to write a patent application based on whether or not I am willing to do your work in weeding out prior art. Let’s see–I am an attorney who has written many patent applications for many of the top technology companies in the country. And you have never written an application.

    And, I told you to stop calling people tards. It makes you sound like you are 14.

    Reply
  65. 6 ranted: >>The director’s duties are defined by the lawl, >>not mine. Tard.

    6, you must follow the MPEP by executive order. The MPEP must be in accordance with the law. So, your job is defined by the law.

    Wow, you PTO types really want us to do your job. Sorry, it is not our job, but your job. See above.

    On a practical level, 6, if you would dodge work you don’t have to do, then why do you think we should do work we don’t have to do? And in reality, by and large, we won’t be paid for it either.

    The one useful item out of your rant is that I think your pay per application should depend on how those IDSs. Not sure how to structure it, but it would be fair.

    Reply
  66. ” You astound me with your ignorance and arrogance. That is their job defined by the law.”

    Whereas you astound me with your ignorance and arrogance. Perhaps you can show me where the law defines our job as some such nonsense as you imply? Go ahead, quote it for me.

    “How, prey tell, do you know something is >>material if you haven’t read it?

    6, I hope you are pulling my chain. But, I’ll go through the motions.”

    I’ll repeat the question for your dum b arse since apparently you couldn’t hear me the first time.

    How, prey tell, do you know something is material if you haven’t read it?

    This is in response to your stating:

    “Applicants and attorneys should tell the examiner when we know that something is material”

    Now go ahead, answer the question, how do you know something is material if you haven’t read it?

    “MM and 6 you are shameful examples of government workers trying to dodge work.”

    I don’t think you understand something tardface. My “job” is defined by my PAP, not some lawl. No matter what you might think. The director’s duties are defined by the lawl, not mine. Tard. Learn to read. As to “dodging” work, looking through an extra 500 references that I have to painstakingly verify each one of (without being paid extra like you are) sure, I’ll happily say that I’m “dodging” work that was never accounted for in mah pay check. I’ll “dodge” that kind of work all day long all day strong at any job. You want me to work? Pay me. It’s the same as at pretty much any job. Kind of like at your job. Kind of like, at everyone’s job.

    “what I do is reasonable. ”

    You should have said: “what I do is rtarded”.

    “I know my job. I’d pit my applications against yours anytime. ”

    You’ve demonstrate on this website practically ad infinitum that you know nothing. And I’d pit your applications against some of the attorneys whom I know do a good job anytime.

    “You know it is easy to get angry when you make rational arguments that are based on law and are rejoined with character assassinations.”

    Maybe if your character didn’t go out of his way to be a douche then he wouldn’t get assassinated.

    “The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b)”

    Yeah they should just strike that from the law and watch the backlog fall a couple thousand. Simple change, nobody gets hurt by it either.

    “I usually only need to know what the prior art does not contain, not what it contains.”

    Prey tell how you determine the former without knowing the later.

    “The fact that my character comes under attack on this issue is pretty clear proof that the USPTO is a bunch of lazy sods.”

    Nah, it’s just pretty clear proof that your character is so weak that it is easily assailed. Indeed, assassinated outright! I consider your character dead, if you ever had any character to begin with.

    Reply
  67. The two of you can sod off.

    Reply
  68. I have noticed that lots of things are really complicated. No substitute for the hard work of just learning how it is. Take spelling. Even that old favourite “exaggerate”.

    Reply
  69. If you choose not to submit a reference because it is cumulative you are taking a serious risk that buried in one of those references in a throw-away paragraph is something very material to your application.

    OK, Lionel. Let’s say that I do a search, I get 600 hits, I cite 20 of them because I believe they are the most relevant documents (I actually selected 30 but after reading ten of them, I decided they were irrelvant) but among the 580 references that do not appear to be relevant there is a “throw away paragraph” that is “very material” to the application.

    May I ask you: so what? Where is the IC?

    Reply
  70. NWPA 103 can be subjective and creative. How do I know how someone else may decide to combine references or use a reference for motivation. Way too complicated.

    Yes, it’s way too complicated for you. I agree.

    Reply
  71. So, from the fact that I do not weed out applications for materiality, you conclude “you have apparently scrupulously avoided reading any prior art to your own applications.”

    You certainly know your logic.

    Reply
  72. I’d pit my applications against yours anytime.

    You’ve never read any of my applications that you know of, I’ve never read any of yours that I know of, and you have apparently scrupulously avoided reading any prior art to your own applications. And validity is so confusing, especially under 103. Yet you say yours are better than mine. Reminds me of a story.

    Percy: You know, they do say that the Infanta’s eyes are more beautiful than the famous Stone of Galveston.
    Edmund: Mm! … What?
    Percy: The famous Stone of Galveston, My Lord.
    Edmund: And what’s that, exactly?
    Percy: Well, it’s a famous blue stone, and it comes … from Galveston.
    Edmund: I see. And what about it?
    Percy: Well, My Lord, the Infanta’s eyes are bluer than it, for a start.
    Edmund: I see. And have you ever seen this stone?
    Percy: (nods) No, not as such, My Lord, but I know a couple of people who have, and they say it’s very very blue indeed.
    Edmund: And have these people seen the Infanta’s eyes?
    Percy: No, I shouldn’t think so, My Lord.
    Edmund: And neither have you, presumably.
    Percy: No, My Lord.
    Edmund: So, what you’re telling me, Percy, is that something you have never seen is slightly less blue than something else you have never seen.
    Percy: (finally begins to grasp) Yes, My Lord.

    Reply
  73. your job is to draft claims that are allowable over that reference, which seems to imply knowing what 103 rejections might be raised.

    Of course, what is missing from this view is that Applicants are only required to supply that which they may know (and contrary to the Nedism, are not required to search and/or examine their application.

    Any view to the contrary, including somehow mystically knowing what BUI (broadest unreasonable interpretation) art will be forthcoming from the Office, is simply wrong.

    Reply
  74. >>From the way you post, Patent prosecution is hard. Let’s go shopping.

    I know my job. I’d pit my applications against yours anytime.

    The fact is what I am giving the examiner is what has been made aware to me during the writing of the application. That is reasonable. Try as you might to exagerate or mischaracterize my practice, what I do is reasonable.

    Reply
  75. What a twisted person you must be.

    Exactly. Only a twisted person of dubious character like Max would ever resort to attacking someone else’s character.

    Also, I heard a rumor that Max weighs the same as a duck.

    Reply
  76. IANAE: that is their job.

    Yes, that is their job. But it’s also your job to disclose material references of which you are aware. That job is meant to keep you honest, but also to direct the examiner’s attention to what you (the applicant) think is relevant.

    It’s not your job to submit an IDS with that low a signal/noise ratio, and you’re doing both your client and the PTO a disservice if – as you claim – you truly want better quality examination and allowance of only what ought to be allowed.

    You also do our entire profession a disservice when you throw your hands in the air and complain that it’s too hard to figure out how a person may combine references. That actually is your job. Once you become aware of a reference that might go in an IDS, your job is to draft claims that are allowable over that reference, which seems to imply knowing what 103 rejections might be raised.

    From the way you post, I wonder if you consider any part of the process to be your job. Perhaps you would rather mail the inventor’s completed disclosure form to the examiner, have him read it in its entirety, search the art, suggest what claims might be allowable (broad enough claims to suit your client, of course), and allow the case by examiner’s amendment.

    Patent prosecution is hard. Let’s go shopping.

    Reply
  77. Max, you are a study in twisted bizarre logic. I take comfort in the fact that your character attacks are probably indicative of your own character and motivations. What a twisted person you must be.

    Reply
  78. You know it is easy to get angry when you make rational arguments that are based on law and are rejoined with character assassinations.

    Why don’t you try to help our country and world return to an age of reason by playing fair and using logic and not ad hominem arguments. Have some respect for fair play and not just try to get what you want at the cost of losing civility.

    Reply
  79. Attaboy IANAE, don’t you agree ping? There’s your answer Night.

    I earn my living from the patent system. My motive in using this blog is to condition attitudes so that readers are motivated to improve on the good and drive out the bad. The more the public thinks that the patent system is a “good thing” the more I can charge, for an hour of my time. IDS behaviour is not a shining example of optimal working of the patent system. What to do about it? Criticise it here. Ping, I am not “anti-patent”. Quite the contrary. Can you see it now?

    Reply
  80. >>Hey examiner, everything in class 435 might be >>material. Do your job and start reading.

    IANAE: that is their job. You astound me with your ignorance and arrogance. That is their job defined by the law. You are saying they can’t do their job so do it for them. And, if I don’t do their job then I have a bad character.

    You are not worthy of my time or anyone’s time, but to reform you. There is no value in your character or your arguments. Reform boy.

    Reply
  81. NWPA: The fact is that I want the USPTO to do a good job examining patent applications. I think the better job they do, the better off we all are.

    You might start by disclosing only material references, so they actually have time to read those references properly and “do their jobs”. They don’t have time to duel you left-handed. You know what a hurry they’re in.

    Or is it not your job to secure for your client a good examination of his patent application?

    NWPA: How do I know how someone else may decide to combine references or use a reference for motivation. Way too complicated. If you are going to make the rejections, you should decide if a reference is material or not. Not the attorney or agent.

    You’re right. Thinking is hard, let’s leave it to the examiners we think are incompetent.

    You know, we could save our clients even more money, and even better insulate ourselves from inequitable conduct, by disclosing art according to PTO classification. Hey examiner, everything in class 435 might be material. Do your job and start reading.

    Reply
  82. Highly disengenuous of Boss12 to portray the responsibility of applicants by only citing 1.56 and leaving out the actual controlling section of the rules: 37 CFR 1.97 (h)

    The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).

    Reply
  83. Maxie,

    Your ideology shines through: anti-US. anti-patent. anti-patentee.

    Reply
  84. The fact that my character comes under attack on this issue is pretty clear proof that the USPTO is a bunch of lazy sods.

    Reply
  85. >> in a throw-away paragraph is something very >>material to your application.

    Exactly true. The other thing about this that MM conveniently dropped is that to write a patent application, I usually only need to know what the prior art does not contain, not what it contains.

    Plus, 103 can be subjective and creative. How do I know how someone else may decide to combine references or use a reference for motivation. Way too complicated. If you are going to make the rejections, you should decide if a reference is material or not. Not the attorney or agent.

    Reply
  86. Malcolm,

    As others have posted you clearly do not prosecute patent applications. If you have a search done it may return ten to twenty references. Those were the references I was referring to.

    If you choose not to submit a reference because it is cumulative you are taking a serious risk that buried in one of those references in a throw-away paragraph is something very material to your application.

    And of course you use the old “I should not have to explain it to you” bit to avoid having to actually do just that. However, maybe you should really be listening to people who know better.

    Reply
  87. >>Night, you write “Do your Job” but isn’t that >>somewhat disingenuous? What you mean is “Get >>on and issue the patent” right? In reality, >>you (and your ilk) would wish it that the >>Examiner does NOT actually read all the IDS >>docs, right?

    Max, you never cease to disappoint me. I ask that the examiners do their job–determine whether a reference is material or not–and you counter with stating that I have a bad motive and wish them to allow invalid claims. And, what I really mean is that I don’t want them to read the references.

    You have conflated two separate issues and attacked my character. Try to stay on point.

    To answer you off point question: no I do not wish for the examiners to allow claims that should be rejected by prior art. The fact is that I want the USPTO to do a good job examining patent applications. I think the better job they do, the better off we all are.

    Please let me know why you think that because I state that it is their burden to determine whether a reference is material or not in anyway implies that I want invalid claims allowed.

    Reply
  88. What I find lacking from this blog is the viewpoint of all those who are blackmailed by holders of duly issued claims that are well, actually, invalid.

    Exhortations to “Do your job” ring a bit hollow, when coming from those who make their money drafting, filing and prosecuting applications to issue, with profit depending on how many can be got to issue.

    Night, you write “Do your Job” but isn’t that somewhat disingenuous? What you mean is “Get on and issue the patent” right? In reality, you (and your ilk) would wish it that the Examiner does NOT actually read all the IDS docs, right?

    Reply
  89. Another aspect of this problem is that the USPTO needs to make the examiners the experts in little areas. If the USPTO was doing its job right, the examiners would know the best art to apply and the submissions would only be material in some special cases.

    Funny, how getting the basics wrong manages to cause all sorts of problems.

    Reply
  90. Boss12(Thus, if an individual associated with the prosecution of a patent application (e.g., a patent attorney) submits an IDS listing references that are not “material to patentability” of a pending claim, then one might reasonably argue that the individual has violated the duty of candor and good faith.)

    No they haven’t. The rule is expansive and meant to be inclusive and specifically meant to not include the inference you mention above. Go read the MPEP.

    Your job is to review what we submit. You government workers are all alike. You kick and scream and whine and don’t do your jobs unless your nose is put right into and you are forced to do your job. Do your jobs boys and girls and review what we submit and stop complaining. Do your jobs and stop complaining.

    MM and 6 you are shameful examples of government workers trying to dodge work. Do your job! And quietly, please. The way I practice law is encouraged by the MPEP, the regulations, and the laws. What you are doing is dragging your feet and refusing to do your jobs.

    Reply
  91. >>How, prey tell, do you know something is >>material if you haven’t read it?

    6, I hope you are pulling my chain. But, I’ll go through the motions.

    101: Whoever invents or discovers…
    102: Shall be entitled to a patent unless…
    131 The Direction shall cause an examination of the patent application.
    1.56 duty to disclose

    Sorry buddy, but the laws and rules were written so that it is your job, not mine.

    Reply
  92. There is case law that says burying alone is not IC. If you are an attorney with 1/2 a brain and access to any search engine, you can find it in under 2 minutes. Ready, GO!!!

    Reply
  93. Regarding citations and litigation, a good patent litgator will be able to infer IC in most fact patterns (some that a litigator spoke about at a CLE seminar).

    For example:

    If you cite a couple of references, the litigator will allege that you hid stuff from the Examiner.

    If you cite a lot of references, the litigator will print out all of the references, place them in a pile, and point to a single reference. The litigator will then allege that you tried to bury the most relevant reference.

    If you forgot to cite a reference from a cross referenced case, the litigator will allege IC.

    A litigator can also go through the applications that you are prosecuting, say Application A and Application B are similar subject matter in the claims (not quite double patenting, but whatever). If you somehow didn’t realize this and you didn’t cite the references for Application A when prosecuting Application B, you tried to pull a fast one…

    The patent litgator has become akin to a criminal defense attorney when attacking things such as the chain of custody with evidence during a criminal trial. A good defense attorney’s job, like a defendant’s attorney in a patent lawsuit, is there to create doubt.

    The real problem is that bad facts make bad law (Bilski, anyone?), and although a judge may be correct in admonishing an attorney for bad practices, the case law that is derivied from such a situation leads to frankly dumb results.

    For example, under McKesson, one takeaway is that one should cite US office actions from cross-related cases. I never thought that an Office Action itself (especially written by the same Examiner) is to be considered material prior art, but there you go….

    So, what is one to do?

    Cite like mad, and hope Judge Raider’s views sways the Federal Circuit to limit the imposition of IC. Or alternatively, let’s go for this rule on attorneys’ fees, “If the defendant alleges IC and loses on that count, the plaintiffs’ attorney fees and court costs get paid for by the defendant”.

    Reply
  94. Boss 12 has never been involved in patent litigation where inequitable conduct was at issue, especially one where he was the practitioner accused of inequitable conduct.

    Reply
  95. “I’m trying to think of a good reason NOT to submit a ton of references.”

    How about the following:

    (1)

    Rule 56(a) requires the applicant to disclose to the USPTO all information that is known to be MATERIAL TO PATENTABILITY. Rule 56(b) also defines when information is “material to patentability.”

    (In my experience, these portions of Rule 56 indicate that around 99% of the references that are listed in the IDSes that I have reviewed should not have been listed.)

    (2)

    Rule 56(a) expressly states: 1) “There is no duty to submit information which is not material to the patentability of any existing claim.” 2) “Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office.”

    (Thus, if an individual associated with the prosecution of a patent application (e.g., a patent attorney) submits an IDS listing references that are not “material to patentability” of a pending claim, then one might reasonably argue that the individual has violated the duty of candor and good faith.)

    (3)

    Reviewing listed references that: 1) are “cumulative;” and/or 2) are not “material to patentability,” is a waste of my time and adds to the USPTO’s backlog of pending patent applications.

    Reply
  96. MM,

    You are right, there is no law that states that they have to read each and every word, but the reading should be thorough.

    MPEP 2163

    A. Read and Analyze the Specification for Compliance with 35 U.S.C. 112, para. 1

    Office personnel should adhere to the following procedures when reviewing patent applications for compliance with the written description requirement of 35 U.S.C. 112, para. 1. The examiner has the initial burden, after a thorough reading and evaluation of the content of the application, of presenting evidence or reasons why a person skilled in the art would not recognize that the written description of the invention provides support for the claims

    Reply
  97. the laws were written

    As I recall, the laws don’t say that Examiners need to “read every word” in the specification.

    Reply
  98. “Applicants and attorneys should tell the examiner when we know that something is material,”

    How, prey tell, do you know something is material if you haven’t read it?

    Sorry NWPA, the laws, rules and ethical obligations were written with that being your job as well at least in so far as the references you want to submit is concerned.

    Reply
  99. >>you’re asking the examiner to read them all >>and assess their relevance to the claims.

    Which is their job. The examiners should be the ones that figure this out. Applicants and attorneys should tell the examiner when we know that something is material, but we have no proactive duty to find material references.

    Sorry, examiners, but the laws were written that it is your job–not ours.

    Reply
  100. Malcolm you are a gem.

    6 and Malcolm, you two are naive idealists. You believe in the perfectibility of human nature. But your remedies for imperfection are to pile on punishments. Yes, whip the fallen slaves so that they may learn.

    Reply
  101. “There is only one spec, but a potentially infinite supply of references.”

    Maybe you’re unaware, but examination of the one spec requires comparing that “one spec” (around 20 pgs of subject matter on avg.) to the potentially infinite supply of references.

    “Still, if you make the decision to file all the references because there are too many to read and assess for relevance to the claims, you’re asking the examiner to read them all and assess their relevance to the claims.”

    Precisely the point.

    “The examining corps expects attorneys to do what is impossible: read all the references.”

    Not really, I expect them not to btch when their spec doesn’t get examined in full. And the attorneys in my cases more or less do not. The ones on the interwebz however make it a fav pastime.

    “The Fed Cir has created a monster that is consuming us all. Its effort to create a perfect world is ending is predictable disaster.”

    Nah, simply provide huge sanctions to attorneys who get found out for having not read the references. The only thing the Fed Cir created was a monster that should have stopped attorneys from acting unethically, but they insist upon doing so, quoting $$$ as their reason for doing so when really that should just be a reason to deny a client.

    Reply
  102. Ned: In my paranoid dreams,The Fed Cir has created a monster that is consuming us all me Run for your lives!!!!.

    Fixed.

    Reply
  103. There is only one spec, but a potentially infinite supply of references.

    Finite but unbounded, actually.

    Still, if you make the decision to file all the references because there are too many to read and assess for relevance to the claims, you’re asking the examiner to read them all and assess their relevance to the claims.

    Reply
  104. “Seriously, it’s fun to see attorneys shirk their responsibility (while we know they’d all do it) and then see some of them come on here and bit ch to high he ll that examiners don’t examine their spec in its entirety.”

    There is only one spec, but a potentially infinite supply of references. I don’t think this is a valid comparison.

    I’m only willing to cry you a stream.

    Reply
  105. Malcolm and 6, now we get to the rub, do we not? The examining corps expects attorneys to do what is impossible: read all the references. They cannot, so they submit them without reading them. Now the Director and the public expect the examiners to read all the references submitted with no additional time to do so. They cannot. So the buried jewel can be missed.

    The Fed Cir has created a monster that is consuming us all. Its effort to create a perfect world is ending is predictable disaster.

    Reply
  106. “Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large.”

    Then the case should not be submitted until you’ve had a chance to look through the refs. And in the event the refs come in after submission to the office then they should be read in their entirety before submitting any response to the PTO.

    “The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.”

    An examiner probably can’t either but, nevertheless, we’re required to. I see no reason to let the attorney off.

    “The world of IC and ethics is in conflict. ”

    Nah, they’re really not.

    “One cannot comply with the irreconcilable orders of two masters, particularly where one is a vague and indefinite master and the other is one who pays the bills.”

    So tell the one who is paying the bills that you can’t accept his work until he can pay the amount required.

    Seriously, it’s fun to see attorneys shirk their responsibility (while we know they’d all do it) and then see some of them come on here and bit ch to high he ll that examiners don’t examine their spec in its entirety.

    Cry me a river.

    Reply
  107. Ned The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.

    False.

    Reply
  108. Wouldn’t be so quick to dismiss as “urban myth.”

    I was referring to the existence of a case where IE was actually held for “burying” a reference.

    Make no mistake: if an attorney and a client conspire to bury a key reference amidst hundreds of references of cumulative junk and it comes out at trial or during discovery that this was the intent (and it succeeded), it will be a bad day for the patent.

    That’s why the best course remains (how many times have I said this?): act reasonably — not like a chicken little or a robot — with respect your IDS submissions and you will be as safe from a successful IE finding as you can expect to be.

    Reply
  109. More about burying references as evidence of bad faith/intent to deceive PTO:
    link to patentlyo.com

    Wouldn’t be so quick to dismiss as “urban myth.”

    Reply
  110. TINLA, thanks for the link. It opens:

    “TO Discipline Director Harry Moatz repeated his statements regarding a practitioner’s duty to make reasonably inquiry prior to submitting any papers to the USPTO. “Practitioners submitting papers must read each paper submitted to the Office before it is submitted. Each submitted paper must be read in its entirety … regardless of the source of the paper.” The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. § 11.18(b). ”

    Now, given the requirements of the real world, this is impossible — which is why IDSs are becoming so large. As illustrated by Night Writer, modern searches are producing large numbers of references. The prosecuting attorney cannot read them all to exclude those completely irrelevant or cumulative. He has to disclose them all without reading them.

    The world of IC and ethics is in conflict. One cannot comply with the irreconcilable orders of two masters, particularly where one is a vague and indefinite master and the other is one who pays the bills.

    Reply
  111. Harry Moatz also says you are supposed to read each paper you submit, presumably even if it is in another language. I guess he means you have to read the whole thing, not just scan the titles.

    I guess we should be thankful he doesn’t require you to file a brief synopsis of what’s in each paper and why it is relevant to the claims.

    Reply
  112. “I thought there was a case not too long ago finding IE because a more relevant reference was found among many not so relevant references.”

    I think this is an urban myth.

    I haven’t heard of a case, but there was the time Mr. Harry Moatz, Director of Enrollment and Discipline at the USPTO, speechified that it would be a violation of 37 C.F.R. § 11.18(b) to bury a reference material to patentability among a large number of cumulative references. There was poast here on Patently O about it. Ah, here it is:

    link to patentlyo.com

    Reply
  113. I thought there was a case not too long ago finding IE because a more relevant reference was found among many not so relevant references.

    I think this is an urban myth.

    A skillful lawyer looking for an IE can make finding a banana-peal, an arguement for IE.

    True enough. Another reason not to waste time citing 600 references.

    Reply
  114. There are two distinct reasons for citing references. One is to help the examiner and get a good patent allowed. Another a totally separate reason is as others have mentioned, IE.
    A skillful lawyer looking for an IE can make finding a banana-peal, an arguement for IE.

    Reply
  115. I thought there was a case not too long ago finding IE because a more relevant reference was found among many not so relevant references. So, they surmised the practioner was trying to “bury” the most relevant reference.

    So you have that to contend with as well.

    Reply
  116. Lionel Went right by me.

    Uh … that’s a good thing, Lionel. It shows you aren’t a tinfoil-hatted freek. Most of the time.

    the penalty is so high for not including a reference that a scan of each single patent takes at least ten minutes as you have to check every paragraph and every drawing.

    Whose patent are you referring to? As I’ve noted already, in most instances the closest art is quite close. Then there are typically five or six refs that make up the difference and disclose the other elements in some related context.

    All the rest is cumulative. Once I’ve got these key refs identified, scanning a list of say, 100 refs, for stuff that looks better than what I’ve already got takes ten minutes. Maybe I find two or three that merit a closer look. Another fifteen minutes to order them up and check ‘em out.

    25 minutes. Still cheaper for the client, I’d say, than getting all the refs together (particularly if they are NPRs) and filing an IDS.

    If the patent agent/attorney is aware of a reference and the written description is not identical to another cited reference and the subject matter has any relation whatsoever to the client’s invention, then all goo patent agents/attorneys will include that reference in an IDS.

    Ah, Lionel. We’ve been through this bullshxt 99 times before. What you wrote is simply false and only a jackxss would bother explaining the reason to you for the hundredth time.

    Reply
  117. TINLA,

    Nice catch on Mooney’s use of the word Applicant. Went right by me.

    And Mooney, the penalty is so high for not including a reference that a scan of each single patent takes at least ten minutes as you have to check every paragraph and every drawing.

    If the patent agent/attorney is aware of a reference and the written description is not identical to another cited reference and the subject matter has any relation whatsoever to the client’s invention, then all goo patent agents/attorneys will include that reference in an IDS.

    Reply
  118. Mooney “it really doesn’t take much time to consider whether some new reference is cumulative to what you got. In most cases, it takes less than ten minutes to scan through the titles and eliminate the worthless stuff.”

    That’s easy for a USPTO employee, no doubt. But practitioners know that its the oldest trick in the book for a defendant in an infringment lawsuit, first thing, to look for art of record in another of the plaintiff’s patents that was not submitted in an IDS, and that was cited by the Examiner in the patent being enforced in rejecting a claim at some point during prosecution. The end.

    Reply
  119. a POTUs:
    nice observation. right off hand, i forget the USPTO’s reasoning for making that * distinction on the patent cover. but it’s there.

    Reply
  120. Sheraton: “he or she includes an 892 even though the reference was previously cited by us in an IDS–I’m not sure why.”

    It’s possible that the examiner found the reference independently from considering the IDS. At that point, the reference needs to be cited somewhere, and checking the refs to be cited on the 892 against the refs already cited on the IDSes is a waste of time.

    Plus, it gets the ref marked with a * on the face of the patent.

    Reply
  121. Mooney “If it’s not clear from the invention disclosure, I simply ask the applicant ‘What’s new about this?'”

    OK, I’m now convinced that you are, in fact, a PTO employee. Attorneys/Agents don’t refer to their inventors/clients as “applicant.”

    Reply
  122. Mooney wrote:

    “If it’s not clear from the invention disclosure, I simply ask the applicant “What’s new about this?””

    You and every other patent attorney. That’s patent agent/attorney 101 stuff.

    What does that have to do with the client’s willingness to pay for an analysis of the search results? As stated above, it’s not that difficult to determine whether a reference is a 102, but 103 analysis is time consuming and very few clients will pay for it.

    Reply
  123. “he or she includes an 892 even though the reference was previously cited by us in an IDS–I’m not sure why.”

    The examiner may have identified the reference as being particularly relevant through his or her own searching before considering the applicant’s 892 list. At that point, we may be entering Theory of Mind territory…

    Reply
  124. Tks DIP. Good points. This is all very sad.

    Not sad at all. It turns out that my lazy IDS practice is doing way more than just meeting my disclosure obligations and minimizing my client’s legal expense. It’s also making it more difficult for other people to perform searches and value their portfolio.

    Well, except for AI, who apparently knows immediately when the value of his portfolio doubles.

    Good news for everybody, I should think.

    Reply
  125. This probably wouldn’t change the numbers that much, but in some of our cases when the Examiner cites a reference in a rejection, he or she includes an 892 even though the reference was previously cited by us in an IDS–I’m not sure why. Also, do these numbers include Office Actions from copending cases? That’s been a significant new source of citations for us.

    Reply
  126. Tks DIP. Good points. This is all very sad. I draw the obvious conclusion, that “Less is More”?

    Reply
  127. A couple of random thoughts with regard to patent citations…

    1) The kitchen sink style IDS which is being submitted in a healthy percentage of cases makes searching more difficult. Citation analysis is one of the primary tools in searching, but is becoming less useful as the volume of noise increases. (A simple forward and backward citation search on a particularly relevant reference used to be an extremely high precision search strategy which is independent of key words and classification issues.)

    2) How do the all or nothing IDS submission styles affect the automated valuation software used to evaluate a patent portfolio? (Most of these systems are heavily dependent upon citation analysis to determine a patent’s value.) Does citing the same stuff over and over assign value to those references according to the software programs? If so, would there then be an additional incentive to cite everything besides the legal issues?

    Reply
  128. Somebody upthread lamented poor standards of written English amongst the cadre of Examiners at the USPTO. Having just read 07.45 am from “Another Junior Examiner” I’m concerned too. What could the drastic devolution of a patent application entail, I wonder. I console myself with the thought that there is much impersonation in this blog. just because somebody says he is an Examiner does not make him one. Perhaps he (or she) is an examiner of blog threads, or a PTO examiner so junior that he has not yet received any basic training.

    I hope no German-thinking Examiner at the EPO is reading. We don’t want to give them any more encouragement do we, to reject a claim on the basis that it fails to enable the invention.

    Reply
  129. I’m trying to think of a good reason NOT to submit a ton of references.

    If your client gives you 20 patents for element A, 20 patents for element B, 20 patents for element C, 20 patents for element D, and 20 patents for element E you have 100 patents. The easiest thing is to just submit them.

    My question is, if 19 of the references for each of the elements are really in 19 other technologies, have you just admitted that those technologies are analogous?

    Put another way, your client invents a paper clip. He gives you 20 references directed to bent metal objects including one for a staple (arguably the closest prior art) and one for a safety pin (also probably close and should be submitted) and also references in the construction field, the boating field, the electronics field . . . . Wouldn’t it be hard to argue that a reference found by the Examiner in the other fields is nonanalgous if you had already introduced art in the same field? Might that be a reason that you should not submit extra prior art?

    By the way, I haven’t been successful in arguing a reference is nonanalogous in years! Just a thought.

    Reply
  130. “Obviously, this is from someone clueless about what patents really do in the real world (e.g. serve contractual basis).

    So “obviously”, knowing what the F you are talking about, might help you understand why the documents are actually written the way they are. O wait – examiners are not trained in understanding legal matters.”

    The incivility you show toward others is unbecoming. Patents are suppose to set out the metes and bounds of the invention in such a manner that a person of ordinary skill in the art can make and use the invention. The fact that patents form the basis of contractual obligations is not relevant to the statutory requirements of the disclosure. I’m not sure what art you practice in, but the applications regarding computer related arts have devolved drastically over the last several years to the point that many can’t be interpreted at all.

    P.S. I highly doubt you have more legal education than myself.

    Reply
  131. Neither beliver nor reject anything…

    This is good advice for all, but especially for examiners. Don’t be liver.

    I think I’ll go buy some shoes.

    Reply
  132. Neither beliver nor reject anything, because any other person has rejected of believed it. Heaven has given you a mind for judging truth and error, Use it. Do you think so?

    Reply
  133. Clients are not paying for IDS’s because of the economy and so practitioners are not filing them?

    Reply
  134. Hey Broj and other physicstards, guess wut? Gravity doesn’t exist.

    link to nytimes.com

    link to arxiv.org

    Well, it might not. Who can really say?

    But I do think this is a good way to think about gravity. I had considered the other day that perhaps it doesn’t exist in the classical sense, but rather as a way of percieving things ever since I heard a program on the NPR about this guy that was talking about how they’re starting to consider perception more and more in the study of some things rather than attempting to be objective.

    It’ll be interesting to see what comes of this paper. It’s a nice paper, but looks a bit amateurish, likely due to the speed with which it was published. He hasn’t really worked on his theory much and there are big ol’ gaping holes that are apparent upon perusal.

    Reply
  135. Night writer: you did not list another choice. Read each reference and make notes as to why in your opinion they alone or in combination with other references do not render your claim unpatentable. Obviously, with a lot of references, this will be expensive. But if you do it, you can file with disclosing any of them.

    Clue, no intent to deceive.

    But this approach argues against a search.

    But, given a budget, you have no choice but to skip the review and submit all references.

    Reply
  136. The duty of disclosure applies to information that a “reasonable examiner” would find to be relevant. Usually patent attorneys/agents have a better understanding of this standard than inventors. Inventors often don’t understand why a secondary reference was cited when the point of the reference has nothing to do with the invention, and inventors tend to focus on what a reference shows (e.g. with experimental data) rather than what is said in the introduction or conclusion. If inventors don’t understand why the Exmainer cited a reference, are they the best people to decide which references should be submitted in an IDS? Maybe for the first cut of references, but probably not for close calls.

    Reply
  137. Sorry for the rant but people shouldn’t be forced to learn the skill of reading obfuscative B.S.

    Obviously, this is from someone clueless about what patents really do in the real world (e.g. serve contractual basis).

    I have been told (and there has never been a reason to doubt) that patents are the most intensive legal documents that any type of lawyer will produce.

    So “obviously“, knowing what the F you are talking about, might help you understand why the documents are actually written the way they are. O wait – examiners are not trained in understanding legal matters.

    Reply
  138. “Sorry for the rant but people shouldn’t be forced to learn the skill of reading obfuscative B.S.”

    Obviously the truth, but attorneys will point you to the judiciary supposedly making them write that way.

    Make no mistake, the judiciary is squarely responsible for practically all of the major good and the ills of the patent system. From prima facie cases, obviousness (now made statutory but originally not), failure to uphold decent 101 standards, and failure to uphold decent 112 standards the list ranges from the important down to the smallest details. It is when the courts fail that the patent system breaks down as they are what holds power over it and that which it is built upon.

    Reply
  139. “IE” (In-Equitable?) and “IC” (Inequitable Conduct) are interchangeable terms then?

    Reply
  140. Note to practitioners, the following quote from Night Writer is what is wrong with the current state of the patent bar: “give the refernces to inventors and ask them to spend days trying to figure out patent when they have no skill in reading patents and often just can’t understand the patents,”

    You’re suppose to be writing the disclosures in such a manner that a person of ordinary skill in the art can read them and understand them (112, 1st). No skill in reading patents should be required. Sorry for the rant but people shouldn’t be forced to learn the skill of reading obfuscative B.S.

    Reply
  141. Or your client has a new invention in a technology where he has 5 issued patents and 4 pending applications plus foreign patents and applications (and so maybe a total of 150 references) and one of those patents was involved in litigation where the other side brought 50 more references to your attention. So now you have a box of 200 references and you just filed an application for the new invention. What are you going to do with those 200 references?

    Reply
  142. Hypothesis: the lower number of references cited by the Office is because, these days, the Examiner reads the EPO’s EESR before doing his/her own search.

    Mooney at 12.58pm is right on the money. Compared with a failed sally into Europe, USD1500 spent doing a worthwhile pre-drafting search before filing PCT is chicken feed.

    Reply
  143. Cheryl –
    So…while preparing the application, the inventors mention say 3 documents they are aware of. Just to get help on some background information regarding aspects your not familiar with, you do some googling and review 3 more documents. So, you file and cite 6 documents…

    You also file in Europe and Japan, Canada, India and Korea. The examiners in each of those locations cites 5 documents, thats another 25 documents,there is some overlap, so you only site an additional 20 in a follow up IDS 3 years after your initial filing. You have an governmental patent office saying the documents are relevant are you going to run the risk of being charged with inequitable conduct by not filing the ones you think are irrelevant? No, you file them and let the PTO sort them out.

    Reply
  144. >>it takes less than ten minutes to scan through >>the titles and eliminate the worthless stuff.

    So, 30 references times your 10 minutes = 300 minutes or 5 hours * $300 (low ball) = $1,500.

    Reply
  145. I simply ask the applicant “What’s new about this?”

    Just to be safe, you should also ask the applicant “what prior art inspired you to make this invention?”

    Reply
  146. “Every applicant should be aware of the closest art when they are drafting their applications”

    Of course, this is only after the client blesses such a tactic and agrees to pay for this effort. The client, naturally, has the right to choose a different approach.

    Posted by: Anon | Jul 13, 2010 at 01:04 PM

    If it’s not clear from the invention disclosure, I simply ask the applicant “What’s new about this?”

    Reply
  147. Makes one wonder if perhaps we should be bringing the 112 1st hammer down more often.

    You betcha!

    Time to make the understanding o’ patents match PHOSITA.

    Oh wait, dem PHOSITA can be pretty darn smart, no? They aren’t the same as actual inventors are they?

    Reply
  148. Interesting that there’s a contemporaneous decrease in examiner-cited references as well. A guess would be that this is related to the examining corps becoming more experienced due to the hiring freeze. If prosecution time has also decreased (which would be expected from a more experienced corps), the lower number of applicant-cited references might be due to the applicant receiving fewer foreign actions before the US application passes to issue.

    Reply
  149. NWPA: “give the refernces to inventors and ask them to spend days trying to figure out patent when they have no skill in reading patents and often just can’t understand the patents”

    Makes one wonder if perhaps we should be bringing the 112 1st hammer down more often. After all, patents are supposed to enable the ordinary artisan to make and use the invention, and they can’t do that if the ordinary artisan can’t even understand the patent.

    Reply
  150. Every applicant should be aware of the closest art when they are drafting their applications

    Of course, this is only after the client blesses such a tactic and agrees to pay for this effort. The client, naturally, has the right to choose a different approach.

    Reply
  151. May we hear from Mooney on this? I recall him saying that if you have no intent to hide you should not be afraid.

    Every applicant should be aware of the closest art when they are drafting their applications, particularly if they are going into Europe or another country where written description issues may prevent one from amending around the closest art if you lack a built-in “escape hatch.”

    Once you’ve got the closest twenty or so references under your belt (and that’s a stretch — most often, there’s just a handful), it really doesn’t take much time to consider whether some new reference is cumulative to what you got. In most cases, it takes less than ten minutes to scan through the titles and eliminate the worthless stuff.

    Reply
  152. May we hear from Mooney on this? I recall him saying that if you have no intent to hide you should not be afraid.

    My thought is this: if I cite the top hundred or so references, everything in my files, then the discovery process has only to find something not on the list that is more relevant than No.100 and my client’s in trouble. But, if I cite only the top 12, what harm to me is the same uncited reference, less relevant than No. 12 (but much more relevant than No. 100)?

    If I list “everything” am I not increasing the risk that comes from having overlooked something?

    Reply
  153. An IDS, at one time, a relatively simple task, is not so simple any more!

    It’s simpler than ever if you choose (a). You don’t even have to read the references, or file copies of them. You have some salaried clerical worker enter some numbers into a form, and you’re done.

    How refreshing that NWPA and I are in complete agreement. Choosing (a) is barely even a choice, and it won’t be unless and until there’s some change in the law.

    Reply
  154. I agree with choice (a). Your comments regarding choice (b) are shared amongst your peers. Working as an IP Consulstant, I often hear from practicioners that IE is one of their greatest fears. Additionally, the management of prior art not only in the family cases, but also those related by subject matter is beginning to cause headaches. An IDS, at one time, a relatively simple task, is not so simple any more! I hope you have a good secretary who understands IE and the challenges you face as a practicioner with challenging the IDS beast.

    Reply
  155. And giving this a moments more thought:

    I know what isn’t in the references so I knew how to write the application, but I don’t know what is in the references. For example, element a is in many references. Which is the best example of element a to combine with another reference for an obvious argument. I don’t know and no one wants to spend the money for me to figure that out. So, I chose (a).

    Reply
  156. >>I would be interested to know why applicants >>cite so many references. Could they really not >>tell what was the closest prior art? What is >>the pros and cons of citing more or less >>references?

    Let’s see. I am sitting here with a patent application I am about to file–for real. There are about 40 references from an outside search report, and maybe 20-40 other references from me searching and from the inventors.

    Now what are my choices? a) give them all to my secretary and have her file an IDS. b) sort through them and spend hours of time and try to explain to the corporation why they should pay thousands of dollars to find the closest prior art and risk IE at trial. c) give the refernces to inventors and ask them to spend days trying to figure out patent when they have no skill in reading patents and often just can’t understand the patents, and when the corporation frawns on me having them spend time on anything other than the core of getting the app writen.

    Let’s see…which should I chose such a tough choice.

    Reply
  157. I would be interested to know why applicants cite so many references. Could they really not tell what was the closest prior art? What is the pros and cons of citing more or less references?

    Reply
  158. Another interesting study would be to see what fraction of cited references are already in the hands of the PTO (such as in another application file)!

    You might be interested in my article on the McKesson problem:

    link to pharmapatentsblog.com

    Reply
  159. An interesting study would be to see what fraction of cited references are already available through Google or other search engines.

    Reply

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>